Gallo Drops the Bomb, Sues Grenade Energy Drink Co. for EL GALLO and EL GALLITO Trademarks
USPTO Finds Trademark CHAMPARTY Not Confusingly Similar to CHAMPAGNE Appellation
The Board concluded that the mark CHAMPARTY differs substantially from the mark CHAMPAGNE, “so as not to be likely to cause confusion, mistake or deception as to the source of applicant’s goods.” Alas, CIVC/INAO has the CHAMPAGNE, but nothing to celebrate.
Link to:
Comité Interprofessionel du Vin de Champagne and Institut National de l’Origine et de la Qualité v. Shlomo David Jehonadav, Opposition No. 91195709 (March 8, 2013) [not precedential].
Copyright Dickenson Peatman & Fogarty at www.lexvini.com
Water = Wine? Joel Gott Wines Defeats GOTT LIGHT Trademark for Water
On June 26, 2013, the Trademark Trial and Appeals Board (“TTAB”) of the U.S. Patent and Trademark Office (“USPTO”) sustained the opposition filed by Joel Gott Wines (“JGW”) against the trademark application for GOTT LIGHT and Design for water based on JGW’s prior registrations for GOTT and JOEL GOTT for wine.
A copy of the decision may be found at the following link:
http://ttabvue.uspto.gov/ttabvue/v?pno=91197659&pty=OPP&eno=48
When evaluating the issue of likelihood of confusion between two trademarks the principal considerations are the similarity of the marks and the similarity of the goods. When no similarity is found as to one of these two categories, there is almost always a finding of no likelihood of confusion.
In this case, the issue of similarity was fairly cut and dry. GOTT and GOTT LIGHT are obviously similar given the dominant use of the term “GOTT.” The marks JOEL GOTT and GOTT LIGHT were also found to be similar given that both marks contained the term “GOTT” and the fact that the term “JOEL” connotes a persons name giving emphasis to the term “GOTT.”
The more interesting part of this case was the finding as to similarity of the goods: water and wine {insert bad religious pun here}. Goods are generally found to be similar and related if they are complimentary, move through the same channels of trade, or if there is evidence that the same mark is not uncommonly used on both types of goods. In this case, JGW submitted evidence that demonstrated that it is fairly common for wineries to offer water in their tasting rooms that is branded with the same mark as their wine. JGW also submitted evidence that demonstrated that water and wine are sometimes sold in the same areas of a store, or will appear in the same section of restaurant menus. Additional evidence demonstrated that wine and water are also used in a complimentary fashion such as for mixed drinks like a wine spritzer.
Given all of this evidence, the TTAB concluded that water and wine are related goods, and given the similarity between the marks at issue, there existed a likelihood of consumer confusion between the JGW marks for wine and the GOTT LIGHT mark for water. Accordingly, the trademark application for GOTT LIGHT was denied.
This case was designated by the TTAB as precedential meaning it can serve as a basis to support findings in future cases. Typically, the TTAB only designates about fifty cases as precedential in a calendar year.
Dickenson, Peatman & Fogarty is proud to have represented Joel Gott Wines in this case.
For any questions or assistance on trademark matters or TTAB opposition proceedings contact Scott Gerien at [email protected].
Chateauneuf-du-Pape Syndicat Denied by USPTO in Attempt to Protect Appellation
For questions or assistance on trademarks and geographical indications contact Scott Gerien at [email protected].
A Hit Like a Ton of BRIX – Trademark Office Protects Restaurant’s Rights in BRIX Trademark
Second, the Trademark Office found that the “restaurant services” and “wine bars” and the other services recited in the applications and registrations were deemed to be legally identical. Applicant’s arguments that its wine bar is “somewhat dark and sophisticated and has a relatively enclosed atmosphere,” while registrant restaurant establishment “has a relatively light and airy atmosphere overlooking outdoor vistas” was unpersuasive. Further, the Trademark Office was not convinced that restaurant consumers were “sophisticated” stating that “restaurant and bar services can run the gamut in terms of cost and clientele.”
Finally, Yountville Partners, Inc. enjoyed a presumption of exclusive right to nationwide use of the registered marks regardless of its actual extent of use. Thus, the argument that the other BRIX marks were only used inHouston so there would be no likelihood of confusion was unpersuasive.
In theUnited States, the Trademark Office will work to protect the value of marks for those that avail themselves of the relatively inexpensive trademark and service mark registration system. However, the USPTO makes decisions as to registration of marks but has no jurisdiction to stop a party from using a mark. Such jurisdiction rests exclusively with the state and federal courts.
This opinion, which is not a precedent, was recently obtained in a proceeding before the U.S. Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) In re Brix Cellars LLC dba Brix Wine Cellars, Serial Nos. 85111647, 85111682 and 85112408 (TTAB 2013). The following is a link to the opinion: http://ttabvue.uspto.gov/ttabvue/ttabvue-85111647-EXA-20.pdf.
For any questions or assistance on trademark matters contact Katja Loeffelholz at [email protected].
WIPO Symposium on Geographical Indications Wraps Up in Bangkok
The biennial World Intellectual Property Organization (WIPO) Worldwide Symposium on Geographical Indications wrapped up today in Bangkok, Thailand. The 2013 Symposium was hosted by the Thailand Department of Intellectual Property.
The two-day Symposium featured eight educational sessions with over thirty speakers from across the world discussing issues related to the protection and enforcement of geographical indications, including appellations of origin for wine, and the mechanisms and procedures for such protection and enforcement in numerous countries. Presentations included the experiences of various regions known for the production of different goods including Ceylon tea from Sri Lanka, Parmigiano Reggiano cheese from Italy, Scotch Whisky from Scotland, Malaysian pepper, and Napa Valley wine from the U.S.
The Symposium also featured an exhibition of GI products from Thailand and other countries which featured various fruits, coffee, cheese, wine and handicrafts, including a live demonstration of the historic method of production of the silk threads used to make Thai silk.
The Symposium was attended by over 400 participants and was opened by Her Royal Highness Princess Sirindhorn of Thailand. The Symposium serves as an invaluable forum for the exchange of information and ideas related to the protection of appellations worldwide and the promotion of agricultural products, such as wine.
Scott Gerien of Dickenson, Peatman & Fogarty was an invited speaker and presented on the issue of use of geographical indications alongside trademarks and the Napa Valley story in developing a recognized brand in an appellation of origin.
More information on the Symposium can be found at the WIPO web site:
http://www.wipo.int/meetings/en/2013/wipo_geo_bkk_13/index.html
TROs and Preliminary Injunctions: The Wine Advocate, Inc. v. Antonio Galloni
Preliminary injunctions are considered an “extraordinary remedy,” and accordingly, moving parties must meet a high standard in order to prevail. A party seeking injunctive relief must show likelihood of success on the merits of its claim and irreparable harm in the absence of a preliminary injunction. The court will also take into consideration the hardship on defendants should an injunction be granted
TWA may not only seek an injunction to prevent Galloni from publishing the tasting notes, but may also demand a court order “forcing” him to produce those notes to TWA. This constitutes a request for “mandatory injunctive relief” – i.e., a court order directing specific conduct by the non-moving party. Courts exercise heightened scrutiny in such situations.
The complaint suggests that TWA will seek a TRO and preliminary injunction in the near future. Indeed, TWA is free to move the court for a TRO at anytime, even before the 21-day time period for defendants to file a formal answer to the complaint has expired. And given the need to show likelihood of success on the merits, TWA will need to provide evidence to support its allegations of wrongdoing and harm. In short, should TWA follow through with its stated plan to seek a TRO and preliminary injunction, it will need to present a preview of its case-in-chief.
March 6th Presentation on Trademark Best Practices
Is a COLA necessary to Establish Lawful Use of a Wine Trademark?
Wine Institute Presentation on Protecting Your Brand in China
For more information on protecting your wine brand in China contact Scott Gerien at [email protected].
Trademark for Alcohol Held Confusingly Similar to Identical Mark for Cigars
The U.S. Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) recently refused registration of the mark MOCAMBO for rum based on a prior registration for the mark MOCAMBO for cigars. In refusing the registration, the TTAB found that rum and cigars are complementary products in that cigars are enjoyed with a glass of fine rum and are marketed together for simultaneous consumption. As a result, the TTAB concluded that consumers seeing these products labeled with the identical mark would likely believe that the goods originate from the same source and as a result the marks are confusingly similar. To read the full opinion in this case follow this link: In re Licores Veracruz.
While this case did not involve a mark for wine, the same result likely would have followed if the goods at issue were wine and cigars since these goods are also marketed together for simultaneous consumption. This decision is important because it indicates that in clearing a mark for adoption and use on wine, identical marks on complementary goods such as cigars must also be considered in the analysis.
For more information or assistance on trademark clearance contact Scott Gerien at [email protected]
Is Your Brand Safe in Asia?
China is the new darling of luxury good exports, including wine. However, many wineries fail to fully consider the need to protect their trademark in China prior to doing business there. Not only is counterfeiting a problem in China, but so is trademark squatting where Chinese nationals pre-emptively register foreign company trademarks. Scott Gerien, the head of DP&F’s intellectual property practice, discusses these issues in his column in the January 2012 issue of NorthBay biz which may be accessed HERE.
For more information or assistance on international trademark protection contact Scott Gerien at [email protected]
California ABC Reverses Position on Third-Party Providers Following Industry Input
Stopping Gray Market Wine Imports
On October 1, 2011, Scott Gerien, head of Dickenson, Peatman & Fogarty’s intellectual property practice group made a presentation at the annual meeting of the International Wine Law Association in Logrono, Spain on the issue of stopping gray market wine imports in the U.S.
The ability to prevent gray market imports, especially as to wine, has always been difficult under U.S. law. However, a recent case out of the Second Circuit of the U.S. federal courts has provided foreign wine producers and their U.S. agents with a new weapon to potentially prevent the import of their wines through unauthorized importers. In Wiley & Sons, Inc. v. Kirtsaeng, 2011 U.S. App. LEXIS 16830 (2d Cir. August 15, 2011), the Second Circuit held that foreign copyright owners may prevent the unauthorized import into the U.S. of copies of their works not intended for sale in the U.S., thus changing the direction of prior decisions which had generally held that once a copyright owner sells a copy of its work, the buyer of such copy is free to dispose of such copy as the buyer sees fit.
So one may ask, what does copyright have to do with wine? Well, the overwhelming majority of wine is sold with a wine label that is usually a creative work subject to the protection of copyright law. Therefore, even though most consumers are buying the wine to own the content of the bottle, not the label on the bottle, the copyright law still gives the owner of the copyright in the wine label the ability to control how copies of such label are distributed. See Quality King Dist. Inc. v. L’Anza Research Int’l, Inc., 523 U.S. 135 (1998) (recognizing use of copyright law to prevent gray market import of shampoo based on copyright in packaging). Thus, the Wiley decision has the effect of allowing foreign wine producers who own copyright in their label designs to prevent the unauthorized import into the U.S. of authentic, gray market wine obtained in foreign markets.
It should be noted that the Wiley decision is based on a very specific interpretation of the copyright law and only applies to foreign copyrights and copies produced outside the U.S. and then imported here. The Wiley decision also only applies in the Second Circuit (New York, Connecticut and Vermont) and is actually contradictory to an opinion of the Ninth Circuit (California, Arizona, Nevada, Oregon, Washington, Idaho, Montana, Alaska and Hawaii) meaning the issue could actually reach the Supreme Court on appeal.
However, until then, gray market importers selling wine in New York, Connecticut and Vermont (as well as in states in circuits other than the Ninth Circuit which choose to follow the Second Circuit) should beware as foreign producers and their U.S. agents appear to now have a very strong tool to stop such gray market imports.
For a full copy of Gerien’s presentation, click HERE.
For more information or assistance on intellectual property matters contact Scott Gerien at [email protected].
European Court of Justice Recognizes Superiority of Cognac Geographical Indication
On July 14, 2011, Bastille Day, the European Court of Justice (ECJ) recognized the superiority of the geographical indication (GI) “COGNAC” for spirits in Finland over a trademark application encompassing the term “KONJAKKI” for a generic reference to brandy not meeting the standard for the use of “COGNAC” as set forth by the Bureau National Interprofessional du Cognac (BNIC).
The case was largely one of technical interpretation in determining whether a Finnish trademark registration filed in 2001 and registered in 2003 for a mark encompassing the term “KONJAKKI,” the purported Finnish generic term for “brandy,” and the Finnish translation of “COGNAC,” could remain registered despite the fact that “COGNAC” is recognized by the European Union as a geographical indication in the revised EU Spirits Law of 2008 (EU Regulation No. 110/2008).
Even though the Finnish trademark at issue today was registered in 2003 and the new EU spirits law recognizing COGNAC did not come in effect until 2008, the ECJ found that the Finnish trademark application for the mark encompassing the term “KONJAKKI”” was bound by the requirements of Article 23(2) of TRIPs (the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights), and, because it was applied for after the 1996 grandfather date of TRIPS, the ECJ found that the use and application to register the mark encompassing the term “KONJAKKI,” was invalid based on BNIC’s rights to control and certify use of the term COGNAC.
For more information on matters related to geographical indications, contact Scott Gerien at [email protected].
"SKINNY" Brands are Where It’s At
In our monthly review of trademark applications at the U.S. Patent and Trademark Office (USPTO), it appears the latest trend in alcohol beverage products is “SKINNY” brands. In the month of May 2011, there were six different trademark applications filed for marks for alcohol beverage products encompassing the term “SKINNY.” These included the marks SKINNILICIOUS (alcohol cocktail mixes), SKINNY APPLE (hard cider), SKINNY CAIPIRINHA (prepared alcoholic cocktails), SKINNY MOJITO (alcoholic beverages except beer), SKINNY MOMMY (wine) and SKINNY PIRATE (alcoholic cocktail mixes), not to mention the related application for SLIM COCKTAIL (alcoholic mixed beverages except beers).
This latest trend is no doubt inspired by the acquisition of the SKINNYGIRL brand of prepared margarita cocktails by Beam Global from New York Housewife Bethany Frankel for $120 million.
The term “SKINNY” was not unique to the SKINNYGIRL brand when Beam decided to acquire it as there existed established brands with registered marks such as THE SKINNY BITCH for wine and SKINNY TINIS for wine, spirits and liqueurs. Thus, neither Frankel nor Beam could claim exclusivity to the term “SKINNY” in association with alcohol beverage products when the SKINNYGIRL mark was adopted.
Industry publications have indicated that the value of the deal to Beam Global was “to access the built-in demographic and platform that Frankel brings to the table” through her reality TV presence and online social networking outlets. This is a good thing for Beam because the brand itself appears susceptible to knock off without any remedy as evidenced by the prevalent use of “SKINNY” in association with alcohol beverage products and the recent flurry of trademark applications.
This is a good example of how the value of a brand consists of more than just the name, but also how brands without an exclusive right to the distinctive portion of the brand identity are susceptible to legal attempts to free ride on the brand success through the copying of the non-exclusive term which consumers may associate with the brand, i.e., “SKINNY.”.
For more information or assistance on trademark matters please contact Scott Gerien at [email protected]
Wine Trademarks: Rights Can Only be Established by "Lawful" Use
One of the basic tenets of U.S. trademark law is that trademark rights may only be established upon use of a trademark in commerce. Whether the rights are established at common law, or whether a federal trademark application has been filed based on current use or intended use, trademark rights cannot attach until the trademark has actually been used in commerce on or in association with the goods.
However, it is not enough that the use of the trademark be in commerce, the use must also be a “lawful” use in commerce. For the large majority of goods and services, “lawful” use is never really an issue; if you decide to sell t-shirts under a particular mark all you need to do is label the shirts with the trademark and start selling them. However, for those goods subject to government regulation, such as wine, a mark can only be “lawfully” used in commerce once all of the regulatory hurdles for sale of the wine have been met.
Interestingly, although there is a long history of case law dealing with the “lawful” use of a mark, the goods at issue in such cases have been things such as pharmaceuticals, fresh meat and securities investment services, but never wine. This recently changed when on March 31, 2011, the U.S. District Court for the Eastern District of California held valid a pleading that a winery’s use of its trademark was not “lawful” because a Certificate of Label Approval (“COLA”) for the wine label featuring the mark was not obtained prior to the use of the mark on a label. While this is merely a ruling that allows the claim to go forward, it is important in that the Court held that, in relation to wine, “for purposes of trademark priority, lawful use may require compliance with labeling requirements.” Wine Group LLC v. L. & R. Wine Co.,10-cv-02204-MCE-KJN (E.D.Cal. 2011).
Accordingly, wineries should take heed and note that any actions they take (other than filing an intended use trademark application) prior to receiving a COLA and making sure all of their licensing and compliance requirements are in place, cannot establish trademark rights in a wine name or brand. Additionally, any trademark applications for wine based on use, or allegations of use to perfect an intent-to-use trademark application, cannot rely upon use of a mark that is not “lawful” and in compliance with all labeling and licencing requirements for a wine. Most wineries and trademark practitioners without experience with wine industry regulation will frequently make the mistake that simply mocking up a label and putting the wine in the tasting room without a COLA is sufficient to establish use of the mark in commerce, when in fact such use is not “lawful,” and therefore not a valid trademark use in commerce,
For more information or assistance on trademark matters, contact Scott Gerien at [email protected]
Brand Trends for Wine Revealed in Trademark Filings
Brand trends in an industry, or at least branding plans for a particular player in an industry, can often be seen before they actually debut in the market by watching trademark filings. Under U.S. Trademark Law, a brand name, or trademark, can be protected before the brand name is ever used in the marketplace. This is accomplished by the filing of an intended-use trademark application with the U.S. Patent and Trademark Office (USPTO). An intended-use application allows the applicant to essentially lock up a name for a particular product or service for a period of time. If the intended-use application is approved by the USPTO and not opposed by another party based upon some prior right, the applicant then only has to use the name on the identified goods or services in order to perfect the trademark registration, and the trademark rights in the name are then retroactive to the filing date of the trademark application. After registration, the trademark registrant can then stop any intervening users who may have adopted the same or similar names between the filing date of the application and the date of registration (a period which may be several years long), even if such intervening user actually used the name before the trademark registrant used the name.
Because this process allows a party to secure national rights in a name before use has begun, it is one of the first steps many producers will take once they have decided to adopt a particular brand name. Accordingly, watching trademark filings can reveal interesting market trends.
For instance, a review of filings for trademarks for wine in February of 2011 reveals the following interesting tidbits:
- Paterno Wines International, aka Terlato Wines, appears to be pursuing a branding strategy involving text messaging abbreviations and acronyms including the following: BTW; BRB; BFF; FML; FYI; IDK; TLC; TMI; WTF; XOXO (extra credit for anyone who can identify the meanings for all of these abbreviations; do you think TTB will approve a COLA for WTF?)
- The Wine Group appears intent on beating to death the “pastry” market it first exploited with its CUPCAKE brand with new trademark applications for the following names: SMALL CAKES; SWEET SHOPPE; JELLY DONUT; LEMON CHIFFON PIE (I wonder how Layer Cake feels about these new marks?)
- Precept Wines also appears intent on jumping on this band wagon with applications for the following:
CONFECTIONER’S CHOCOLATE; CONFECTIONER’S ANGEL CAKE; CHOCOLATE SHOP CRÈME DE COCOA (something just unappealing about wines named after bakery sweets).
Refusal of Trademark UPSLOPE for Beer Upheld by USPTO Based on Prior Trademark for UPSLOPE for Wine
Consistent with earlier precedent, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) upheld the Office’s refusal to register the trademark UPSLOPE for beer based on a prior registration for UPSLOPE for wine. In considering the likelihood of confusion between trademarks, the TTAB limits the analysis to the trademarks as shown in the trademark applications or registrations at issue, as well as the goods as described in such applications or registrations.
In this case, the marks were identical as identified in the respective trademark application and registration, i.e., the word “UPSLOPE.” Therefore, the critical issue was whether beer and wine are sufficiently related such that consumers would believe that both a beer and wine labeled with the mark UPSLOPE were somehow associated with one another or emanated from the same source.
Applicant, Upslope Brewing, argued that alcohol beverages (e.g., beer and wine) are not related goods per se. The TTAB agreed stating that the relatedeness of alcohol beverages is not an absolute rule and evidence must be considered before making such a determination. However, after reviewing the record, which included Internet evidence of retailers offering beer and wine on their websites, and copies of several registered trademarks in use for both beer and wine, the TTAB was persuaded that the two goods are closely related.
While this opinion clearly establishes that relatedness of alcohol beverages must be proven on a case-by-case basis, it also illustrates that the threshold for such evidence in the TTAB is fairly low such that relatedness can usually be proven so as to support a finding of likelihood of confusion between similar marks for beer and wine.
The full opinion may be found at the following link: In re Upslope Brewing LLC, Serial No. 77650402
For further information or assistance with trademark matters contact Scott Gerien at [email protected]
Casella Wines Files Amended Complaint Accusing The Wine Group of Intentionally Infringing its Yellow Tail Design Trademark
In October of 2010, Casella Wines, the producers of YELLOW TAIL wine, filed a lawsuit in U.S. District Court in
